Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
This application is a 371 of PCT/CN2022/078119 (02/26/2022)
and claims foreign priority to CHINA 202110676210.2 (06/18/2021).
Election/Restrictions
Applicant's election of species with traverse in the reply filed on 4/3/26 is acknowledged. The traversal is on the ground(s) that amended claim 2 requires the compound IrLaLbLc which define a particular ligand coordination environment and architecture that constitutes a special technical feature. This is not found persuasive because the claims are to a scope of compounds which substantially vary in structure such that one of skill in the art would not consider them an art-recognized class and furthermore is not a contribution over the art as detailed in the following prior art rejection.
The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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224
329
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corresponding to La and Lc of
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162
157
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where R6 is Me, R2 is iPr; Lb of
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136
256
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where Ra is CH(Et)2; determined to read on claims 2-5, 9-10, 13-14, 18-19.
As detailed in the following rejections, the generic claim encompassing the elected species was not found patentable. Therefore, the provisional election of species is given effect, the examination is restricted to the elected species only, and claims not reading on the elected species are held withdrawn. MPEP 803.02; Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. lnt. 1987). Accordingly, claims 6-8, 11-12, 15 are hereby withdrawn.
Should applicant, in response to this rejection of the Markush-type claim, overcome the rejection through amendment, the amended Markush-type claim will be reexamined to the extent necessary to determine patentability of the Markush-type claim. See MPEP 803.02.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-5, 9-10, 13-14, 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Boudreault et al. (US 20150315222) in view of Kwong et al. (US20030072964) and Boudreault et al. (US20180212162, “Boudreault’162”).
Boudreault teaches OLED devices (Abstract, [0015]-[0036]) comprising a compound of formula 44 (claim 23, p. 113):
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246
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Boudreault teaches the following compound was known as a successful OLED compound (p. 55, citing to US20030072964 (Kwong)):
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175
254
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.
Boudreault’s compound 44 differs from the elected species by an additional pyridyl ring attached to the benzofuran moiety as circled below:
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Kwong teaches OLED devices comprising a compound of the formula III shown below (Abstract, claims 1, 14):
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321
435
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, A1-A2 is
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84
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which encompasses the elected species (m=3, n=2; R3-R4 together forms a 5-membered heterocycle). Kwong also teaches the compound V (single comp of claim 65, claim 129 oled of comp V):
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.
Boudreault’162 teaches OLED devices comprising iridium complexes of the formula II:
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168
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being a Ir(L)2LB complex (claims 8-10, 15-17) with “L” examples LA642 and LA489 shown below (claims 1-8, p. 12-13):
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and LB is:
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(claim 17) which differs from the elected species by an additional nitrogen in the isoquinolinyl ring. Boudreault’162 also teaches the following iridium examples of OLED compounds:
p. 96:
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p. 104:
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315
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.
One of ordinary skill in the art following the teaching of Boudreault would have considered modifying the claimed compound 44 in view of the known related successful compounds taught by Kwong which was specifically cited to. One of ordinary skill in the art would have considered modifying the ring groups including removing compound 44’s pyridyl in light of the success with Kwongs compound V which was a bicyclic ring at the corresponding position. One of ordinary skill in the art would have had a reasonable expectation of success in the modification because the instant elected species is within the scope of Kwong’s claimed formula III and because Boudreault’162 teaches the related ligand structures, LA642 and LA489 along with the cited compound from page 104, as successful examples of compounds useful in OLED devices. The level of skill in the art is very high as evidenced by the cited art and shown therein where one of ordinary skill in the art routinely alters the structure of the iridium ligands to tune the OLED properties.
With each of the claims, the level of skill in the art is very high such that one of ordinary skill in the art would consider routine the combination of elements from the teaching of the art. One of ordinary skill in the art would have recognized that the results of the combination would be predictable due to the well-known nature and optimizations routinely performed in the art. Thus, one of ordinary skill in the art would have arrived at the invention as claimed before the effective filing date with a reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-5, 9-10, 13-14, 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12477942 in view of Boudreault et al. (US 20150315222) in view of Kwong et al. (US20030072964) and Boudreault et al. (US20180212162, “Boudreault’162”). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim 20’s “CPD 15” is the same compound as Boudreault’s compound 44 which renders the instant claims obvious for the same reasons as in the 35 USC 103 rejection above.
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Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT H HAVLIN whose telephone number is (571)272-9066. The examiner can normally be reached 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at (571) 270-5293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT H HAVLIN/Primary Patent Examiner, Art Unit 1626
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